International Trademark Eligibility: Who Can Apply and How

Any person or entity that is a national of, is domiciled in, or has a real and effective industrial or commercial establishment in a country that is a member of the Madrid Union can apply for international trademark registration. This includes individuals, companies, partnerships, trusts, and other legal entities. The key requirement is that the applicant must have a "basic application" or "basic registration" for the same mark in their home country's trademark office (the "office of origin").

For Indian applicants, the Controller General of Patents, Designs and Trademarks (CGPDTM) is the office of origin. You must first file a trademark application or obtain a registration in India before you can file an international application under the Madrid Protocol. The Indian Trademarks Act, 1999, and the Trade Marks Rules, 2017, govern this process. The international application is then filed through the World Intellectual Property Organization (WIPO) in Geneva.

The international application must be based on the same mark as the basic application or registration in India. The goods and services listed in the international application must be identical to or narrower than those covered in the basic application or registration. You cannot expand the scope of protection internationally beyond what you have already claimed in India.

The application must designate one or more member countries of the Madrid Union where you seek protection. You must pay the required fees, which include a basic fee (653 Swiss francs for a black-and-white mark, 903 Swiss francs for a color mark), a designation fee for each country, and a handling fee (100 Swiss francs) if you file through the Indian Trademark Office. The fees are set by WIPO and are subject to change. You must also provide a clear reproduction of the mark and a list of goods and services classified according to the Nice Classification.

The process begins with filing an international application through the Indian Trademark Office. The Indian Trademark Office will certify the application and forward it to WIPO within two months. WIPO then examines the application for formalities, including the classification of goods and services, the identity of the mark, and the correctness of the designated countries.

If WIPO finds the application acceptable, it registers the mark in the International Register and publishes it in the WIPO Gazette of International Marks. WIPO then notifies each designated country's trademark office. Each designated country has 12 or 18 months (depending on the country) to examine the application under its national laws and issue a refusal if grounds exist. If no refusal is issued within the time limit, the mark is protected in that country as if it were a national registration.

The main advantage is cost efficiency. Instead of filing separate applications in each country, you file one application in one language (English, French, or Spanish) and pay one set of fees in Swiss francs. You also manage renewals centrally through WIPO, which simplifies portfolio management. The international registration lasts for 10 years and can be renewed indefinitely in 10-year increments.

However, there are limitations. The international registration is dependent on the basic application or registration in India for the first five years. If the basic application is refused, withdrawn, or cancelled within that period, the international registration is similarly affected (this is called "central attack"). You cannot expand the list of goods and services internationally beyond what you have in India. Also, if a designated country refuses protection, you must challenge that refusal through local counsel in that country, which can be expensive.

Once the international registration is granted and no refusal is issued by a designated country, the mark enjoys the same legal protection as a national registration in that country. You can enforce your rights through civil litigation, criminal complaints, or customs actions in each designated country, subject to that country's national laws.

For example, if you have an international registration designating the United States, you can sue for trademark infringement in US federal court. You must appoint local counsel in each country where you wish to enforce your rights. The international registration does not create a single, unified enforcement mechanism. You must also monitor the designated countries for potential conflicts, such as third-party oppositions or cancellation actions. WIPO provides a centralized database (ROMARIN) to track the status of your international registrations.

If you are considering international trademark protection, first ensure you have a pending application or registration in India. Then, consult a trademark attorney to evaluate which countries to designate and to prepare the international application. For complex portfolios or potential conflicts, professional guidance is essential.

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This page provides preliminary information. It is not legal advice. For your matter, consult a qualified professional.